Next Event: Case dismissed without prejudice as part of a global Patent License and Settlement Agreement between Apple and HTC.
Summary: This case had been stayed pending the resolution of International Trade Commission Investigation No. 337-TA-710. The court denied motions to consolidate and transfer the case. No other significant events have occurred. Apple and HTC entered into a global Patent License and Settlement Agreement on November 20, 2012 that includes the dismissal/termination of all litigation between the parties. As a result of this Settlement, Apple has filed to dismiss this action without prejudice.
Timeline of Important Events:
- June 21, 2010 – Apple files Complaint against HTC and Exedea alleging infringement of four Apple patents (Filing #1). Apple seeks permanent injunction, damages, and treble damages for willful infringement.
- July 16, 2010 – Defendants file motion to transfer case to N.D. Cal. (Filing #9).
- August 18, 2010 – HTC files Answer and Counterclaim against Apple (Filing #18). HTC asserts the affirmative defenses of invalidity and non-infringement, among others. HTC’s Counterclaim seeks declaratory judgment that HTC has not infringed on Apple’s patents.
- January 18, 2011 – The court issues a memorandum and order denying motion to transfer case to N.D. Cal. (Filing #24).
- August 2, 2011 – Defendants file motion to stay (Filing #30).
- December 22, 2011 – The court grants Defendants’ motion to stay (Filing #48).
- June 22, 2012 – The parties file a joint status report that sets the expected completion date of International Trade Commission Investigation 337-TA-797 is March 7, 2013 (Filing #49).
- November 20, 2012 – Apple and HTC file a Joint Motion to Terminate Enforcement Proceeding without Prejudice Based on a Patent License and Settlement Agreement (Document 497598 in ITC Investigation 337-TA-710). The Patent License and Settlement Agreement includes the termination of all litigation between Apple and HTC, including all litigation in the Federal Court for the District of Delaware. Apple has filed to dismiss this action without prejudice. Other noteworthy portions of the agreement include the following:
- The Settlement encompasses all litigation or challenges relating to “validity, scope, enforceability” of any party’s patents.
- The obligations and restrictions of the Settlement shall be binding on any successor in interest, and the Settlement expressly prohibits the assignment of any rights or responsibilities coming from the Settlement without the consent of the other party.
- The Settlement bans exclusive licenses between any party and a third party if that license does not encompass this Settlement.
- The Settlement requires both Apple and HTC to extend the Settlement to any Patent Holding Company if they create one.
- None of the Settlement’s responsibilities or obligations will maintain in force in the event of a corporate change of control of either HTC or Apple.
- The parties expressly disclaim any third party beneficiaries.